Appeal No. 2004-1890 4
Application No. 09/225,974
decision, Appellant’s arguments set forth in the Briefs along with the Examiner’s rationale
in support of the rejections and arguments in rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us, that the claims particularly
point out the invention in a manner which complies with 35 U.S.C. § 112, second
paragraph. We are also of the view that the Carey reference does not fully meet the
invention as set forth in claims 58-62. We are further of the opinion that the evidence
relied upon and the level of skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as recited in claims 1-3, 5-18,
63-75, 79-86, and 95-97. Accordingly, we reverse.
We consider first the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of
claims 1, 11, and 18 as failing to particularly point out and distinctly claim the invention.
We note that the general rule is that a claim must set out and circumscribe a particular
area with a reasonable degree of precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). Acceptability of the claim language depends on whether one of
ordinary skill in the art would understand what is claimed in light of the specification.
Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568,
574 (Fed. Cir. 1984).
With respect to claim 1, we find no ambiguity or lack of clarity in the existing claim
language which, in reference to the claimed binding rules, recites that such binding rules
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